Battle over the "strange" name

jerrodm said:

I think that's probably exactly what happened bird. This is the reason I think many people on this thread are inclining toward support for the brewery--seems like the kind of thing that could be solved with a phone call to the supplier to straighten out their crossed wires, rather than a huffy C&D letter. Right or wrong (on legal grounds), the LHBS comes across to me as the aggressor here, while the brewery seems to be trying to de-escalate.

As I said before, the legality of the issue is a matter which I'm not qualified to judge, but the optics of it don't look great for the LHBS.

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To back up the theory that a screwed up delivery may have been at fault, I used to manage golf course in a small town with two of them. One was easy to find, on the main drag. The course I managed wasn't. Had several deliveries, even booze and players, end up at the other club. The names were not even similar......

My opinion is the whole story is lame, but I don't get the whole "pursuing legal avenues" culture. Sounds like dude in Mass didn't do a very good job forming his brand if he thinks customers would confuse his with a different business on the other side of the country with a similar name....

I'm kind of feeling like driving over to Marlborough with a mouse in a bottle and asking for free beer.

https://www.youtube.com/watch?v=A3DYbE44OIE

As a business owner, I can agree with protecting one's investment in trademark and copyrights. It is unfortunate that it comes at a time when the HBS wants to expand into brewing and only after CO based brewery has received some accolades. I also know tha if HBS were to pursue matters legally, a C&D usually means that the Plaintiff will need to be able to cover any lost sales for the defendant. You will see a lot of legal documents floating around. A letter from a lawyer is more scare tactic and comes at a relatively low cost. A lawsuit would end up doing more financial damage to all parties unless one of them has real deep pockets.

Now, this issue hits close to home as I try to diversify my business. For several months I checked availibility of a domain. It had been available each time I looked, maybe three instances. When I finally rememebered to register it, I find that another individual registered it ten days prior. Holy F! WTF! If you sleep on it, someone else will jump on it. I have since added one word to the domain name and registered it. I hope that the owner of my original domain is just squatting on it. I would hate to develop my business and grow the name if I find myself in a similar situation to the aforementioned litigants, two years later.

I just spoke with a lawyer friend about this. Although he admits that he is not a trademark lawyer, his insights are still pretty enlightening. He said that he would estimate litigation costs in the hundreds of thousands of dollars to get this in front of a federal judge. Even if it's tens of thousands of dollars, I don't think either of these companies have the money to sustain anything like that. He said that it would come down to the one side willing to spend more money winning or a settlement option. Either way the only ones who really win are the lawyers.

It's definitely fun to debate the merits of the claims though. I personally am on the side of Strange Brewing because I like their beer and the idea that they are competing with a home brew shop in Massachusettes is laughable.

ReverseApacheMaster said:

Some really good discussion on the legal issues in the thread on the AHA board on this.

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Thanks for the tip on the AHA board. Some equally interesting reading over there.

mytommygundont said:

I just spoke with a lawyer friend about this. Although he admits that he is not a trademark lawyer, his insights are still pretty enlightening. He said that he would estimate litigation costs in the hundreds of thousands of dollars to get this in front of a federal judge. Even if it's tens of thousands of dollars, I don't think either of these companies have the money to sustain anything like that. He said that it would come down to the one side willing to spend more money winning or a settlement option. Either way the only ones who really win are the lawyers.

It's definitely fun to debate the merits of the claims though. I personally am on the side of Strange Brewing because I like their beer and the idea that they are competing with a home brew shop in Massachusettes is laughable.

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I agree that neither side really would have the money to fund a legal battle but what is the cost of sending a C&D letter? $1000 tops? If that had got the response the LHBS had wanted then that would have been it = no $100,000+ legal fees.
And maybe that is what game the brewery is playing, calling the bluff. Only time will tell (unless something has happened since I haven't been watching )
As I said before I see this is not an open and shut case and both sides have some arguments to fight with.

mattd2 said:

I agree that neither side really would have the money to fund a legal battle but what is the cost of sending a C&D letter? $1000 tops? If that had got the response the LHBS had wanted then that would have been it = no $100,000+ legal fees.

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I'm not sure what you're getting at here. Both brands are established. It's a little naive (from Strange Brew) to think that a brewery that has won two medals at GABF in two years is going to simply change it's name because of a C&D letter. People know the name now and changing their name will cost them the two years it has taken to get their name out and recognized. They are at the very beginning of the legal posturing and this stupid trademark dispute will leave both places broke if they don't come to an agreement very soon.

kombat said:

I've long felt that a combination brewery-restaurant-homebrew retail business would be a great idea.

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http://surfbrewery.com/ is one, it's great, and the prices are amazing low.

mattd2 said:

I agree that neither side really would have the money to fund a legal battle but what is the cost of sending a C&D letter? $1000 tops? If that had got the response the LHBS had wanted then that would have been it = no $100,000+ legal fees.
And maybe that is what game the brewery is playing, calling the bluff. Only time will tell (unless something has happened since I haven't been watching )
As I said before I see this is not an open and shut case and both sides have some arguments to fight with.

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If the LHBS's annual revenue is really under 100k/yr (remember revenue != profit) as was referenced earlier he likely couldn't afford to get this case in front of a federal judge.

I thought the first C&D letter was pretty straightforward, but that the second letter was openly hostile and unprofessional. It's got me wondering if the lawyer is trying to force this into litigation for his own gain, rather than his clients best interest.

Any word on this one in the past month?

30 breweries are getting together for a sold out event to help pay for the legal costs. Huge level of support for the amazing small brewery.

I will say that while Strange Brew isn't the closest LHBS I'll drive the extra 20 minutes each way because the guys that work there are the best. Not sure how I feel about the litigation, but great selection and staff worth visiting if you're in the greater Boston area.

^^^ I agree about the store and Brian, Josh et al that work there. As for the litigation, it's just the pain in the ass part of running a business...

Cheers!

day_trippr said:

As for the litigation, it's just the pain in the ass part of running a business...

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No, its stupidity. Many other breweries have been able to resolve this the easy way, but the store owner doesn't want to do that. Unfortunately for the store owner, there's enough support in CO to help fund Strange Brewing's legal costs.

usfmikeb said:

No, its stupidity. Many other breweries have been able to resolve this the easy way, but the store owner doesn't want to do that. Unfortunately for the store owner, there's enough support in CO to help fund Strange Brewing's legal costs.

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Name who have taken said easy way (30 bonus points if you can outline the easy way). I know that litigation is the last thing I would want if I was either party. But if a business 1,500 miles away was hurting my reputation with vendors after I had gotten all many ducks in a row I would be pissed.

At the end of the day, owning a small business is hard. Issues like this are always much more complicated than anyone who identifies an industry as a community would ever care to admit.

Knecht_Rupprecht said:

Name who have taken said easy way (30 bonus points if you can outline the easy way). I know that litigation is the last thing I would want if I was either party. But if a business 1,500 miles away was hurting my reputation with vendors after I had gotten all many ducks in a row I would be pissed.

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If you are business with a bunch of customers and you send product to James Karns instead of James Kerns-Who's fault is that? Is it James' fault because he has a similar name? Did James hurt the other James' reputation with you because he had a similar name and thus you sent him the product instead? Or is it your responsibility as a business owner to make sure you send product to the right customer?

This whole vendor confusion business is crap IMO. I think that Strange Brew took their sweet time naming their brewery and then when they were finally ready, they learned that the name had been taken. Now they are using scare tactics to try and get their name back.

mytommygundont said:

If you are business with a bunch of customers and you send product to James Karns instead of James Kerns-Who's fault is that? Is it James' fault because he has a similar name? Did James hurt the other James' reputation with you because he had a similar name and thus you sent him the product instead? Or is it your responsibility as a business owner to make sure you send product to the right customer?

This whole vendor confusion business is crap IMO. I think that Strange Brew took their sweet time naming their brewery and then when they were finally ready, they learned that the name had been taken. Now they are using scare tactics to try and get their name back.

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Your analogy only works if James chose the name after he already knew someone else had it.

To the second part - the filings with the US Trademark office proves that they had the name long ago - and the filing is what you do if you want to protect your name.

brycelarson said:

Your analogy only works if James chose the name after he already knew someone else had it.

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Generally yes, but in this case the fact that "Strange Brew" is a common term, with an obvious association that long predates either company's use, casts uncertainty on whether the trademark is defensible (morally or legally). Someone's Star Wars analogy above was apt. The LHBS is already leaning on the familiarity of the public with both a common term and its specific association with the movie, so I don't see much reason to be sympathetic when he cries foul.

It's even funnier/sadder to see the claim that the brewery was trying to take advantage of the LHBS's reputation and goodwill.

Furthermore, they assert in the C&D and the trademark application to have a claim on the name in the context of "beer." One can reasonably argue either way whether selling beer-making supplies constitutes commerce in the "beer" market. My own feeling is that, no, it's related to beer, but unless they were selling beer under the Strange Brew name, they don't have a valid claim. Furthermore, unless they were actually selling beer in the Colorado market, the fact that they sold other products there is irrelevant.

And, finally, the sad thing is that they could have handled this much more amicably from the start. Defending a trademark does not require sending a rude C&D as first contact, even if you do intend on insisting that the trademark be yielded to you (which is not strictly necessary).

brycelarson said:

Your analogy only works if James chose the name after he already knew someone else had it.

To the second part - the filings with the US Trademark office proves that they had the name long ago - and the filing is what you do if you want to protect your name.

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You also need to defend your name in court to uphold the trademarking.

Filing with the Trademark office doesn't prove squat. All it does is let you go to court.

brycelarson said:

Your analogy only works if James chose the name after he already knew someone else had it.

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I was responding to them claiming that their reputation with vendors has been tarnished becaused the names are too close and thus the vendors were getting confused.

If I opened a lhbs and named Terrapin Home Brewing I imagine the brewery Terrapin wouldn't be thrilled regardless of whether I cited the Grateful Dead song. Especially if it impacted the business in any way.

Every post in this board with someone asking for advice on opening a brewery is followed by 40 replies on how it's a business, do your due diligence. Strange Brew CO didn't, a simple Google search two years ago would have prevented all of this.

The worst part of all of this is that it isn't even a good name.

Knecht_Rupprecht said:

If I opened a lhbs and named Terrapin Home Brewing I imagine the brewery Terrapin wouldn't be thrilled regardless of whether I cited the Grateful Dead song. Especially if it impacted the business in any way.

Every post in this board with someone asking for advice on opening a brewery is followed by 40 replies on how it's a business, do your due diligence. Strange Brew CO didn't, a simple Google search two years ago would have prevented all of this.

The worst part of all of this is that it isn't even a good name.

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From what I remember of what I read they did check. And they did note that Strange LHBS. But they thought in their opinion that they were far enough away and in a market different enough that it would not be a problem. I got the feeling that they did not get any legal advice on that move though.
In the end they were wrong on their assumption.
Although they did do due diligance, they choose to ignore what they found.
(by the way I am agreeing with you)

I feel bad for the lhbs in this.

Sure, it's a ridiculous name, but it's his. He shouldn't be punished for being uncreative.

Home brew and brewing share the same market space.

I should not be allowed to open a company that makes frozen hamburger patties and call it McDonalds. It's too similar. Sure, I'm not a restaurant, but it would be confusing.

The fact that these brewery guys are rallying support online and attempting to subvert the legalities of using the name, speaks volumes about them. Dicks.

Edit: Full disclosure, I work at one of Canada's largest patent, trademark, and full-service law firms (albeit in IT, not as an agent or lawyer).

StittsvilleJames said:

Home brew and brewing share the same market space.

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Maybe, in that one would probably assume a "Budweiser Homebrew" was associated with Budweiser.

However, "Strange Brew" is not a unique term to begin with, so a consumer is less likely to assume such a connection. If their logos, packaging, etc, are different, there's even less likelihood.

The fact that these brewery guys are rallying support online and attempting to subvert the legalities of using the name, speaks volumes about them. Dicks.

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I disagree entirely. I see no evidence whatsoever of ill intent or bad faith here. They found that one of many businesses using a common phrase as part of their name was a small company, 3/4 of the way across the country, in a similar but not directly overlapping business. They concluded there would be no reasonable possibility for significant brand confusion. If they're legally wrong, that's a quirk, because I am strongly inclined to agree that their conclusion was a reasonable one. I don't count standing up for oneself to be dickitry. It's quite possible to reach amicable agreements to resolve issues like this, so IMO the LHBS are the dicks here.

StittsvilleJames said:

I feel bad for the lhbs in this.

Sure, it's a ridiculous name, but it's his. He shouldn't be punished for being uncreative.

Home brew and brewing share the same market space.

I should not be allowed to open a company that makes frozen hamburger patties and call it McDonalds. It's too similar. Sure, I'm not a restaurant, but it would be confusing.

The fact that these brewery guys are rallying support online and attempting to subvert the legalities of using the name, speaks volumes about them. Dicks.

Edit: Full disclosure, I work at one of Canada's largest patent, trademark, and full-service law firms (albeit in IT, not as an agent or lawyer).

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Its his name? Really? How about the oregon based homebrew club that looks like it went back to the early 90's. Or the Movie which has the same name, or how about Creams song name "strange brew"

All this hbs owner has done is tarnished his name.

I just wish someone in the amicable solution camp would tell me what that looks like. What do envision each party would do? I appreciate the sentiment, but this isn't the parking lot of a Phish concert with two burrito slingers named Zed.

Knecht_Rupprecht said:

I just wish someone in the amicable solution camp would tell me what that looks like. What do envision each party would do? I appreciate the sentiment, but this isn't the parking lot of a Phish concert with two burrito slingers named Zed.

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Exactly. Yes, the letter from a lawyer sounds harsh - they all do. That's what you hire a lawyer for.

You have one example of a business owner being responsible and proactive. They filed their name and are now defending it in court - which is required to maintain the trademark. I really don't see how that's the bad guy in this situation. This magic la-la land where everyone's friends isn't how business works.

Do we know that there wasn't a friendly phone call before the letter? Let's just hypothetically say that there was - to which the response was "take us to court". Who's in the right then? Because to me - whether there was a friendly phone call or not the guy who took the time to investigate their own business name, register it and now is willing to pay a lawyer to defend it is simply winning at running a legitimate business.

It took me a matter of a Sunday morning and google to make sure that my LLC had an original name. Not hard and certainly worth my time. I chose a name that was different, therefore I don't have to worry about this. The Brewery, whether through poor assumptions on their part or bad legal advice or neglecting to do their homework is now in court. That's what happens.

The thing it seems you're all ignoring here is whether the name Strange Brew is defensible as a trademark. The term predates either company, and is in widespread use. It's a little bit akin to me trademarking the name "Programming Language" for a new programming language.

Oh wait, IBM did that.
And then they lost.

Cromwell said:

The thing it seems you're all ignoring here is whether the name Strange Brew is defensible as a trademark. The term predates either company, and is in widespread use. It's a little bit akin to me trademarking the name "Programming Language" for a new programming language.

Oh wait, IBM did that.
And then they lost.

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the existence of a name in an unrelated area of business does not exclude one from having a protected trademark in a different area

Delta Airlines and Delta faucets exist as two unrelated companies in two unrelated businesses - the name Delta (mouth of a river) long preexisted both companies and certainly wasn't some new creative name. If someone tried to open an airline related business they surely would lose the suit to Delta Airlines.

Strange Brew was a song long before it was a movie, I don't see anyone here criticizing the film because it used an unoriginal name and infringed on the trademark of Cream.

Why is the homebrew owner any more guilty for ripping off Cream or being uncreative than MGM would be for using the name of a well known popular song as the title of their movie?

the only area that is open for interpretation is whether or not the two similar yet not identical areas of business, brewing and selling brewing supplies, are close enough in nature that they represent a conflict. If the LHBS did in fact protect the name with anticipation of opening a brewery as well they should have a pretty easy case.

being uncreative is not justification for the CO brewery to not do their homework and see if the name was already in use and protected

usfmikeb said:

No, its stupidity. Many other breweries have been able to resolve this the easy way, but the store owner doesn't want to do that. Unfortunately for the store owner, there's enough support in CO to help fund Strange Brewing's legal costs.

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What's "the easy way"? Please elaborate.

bovineblitz said:

What's "the easy way"? Please elaborate.

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Stop being a big old meanie, and just let him use his trademark for free, of course.

I'm just glad my name and idea for a brewing company is original. Threw it into google as brewery and brew with quotations and no hits

terrapinj said:

If the LHBS did in fact protect the name with anticipation of opening a brewery as well they should have a pretty easy case.

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I posted this before - but yes, here are their two filings:

IC 032. US 045 046 048. G & S: Beer. FIRST USE: 19970601. FIRST USE IN COMMERCE: 19970601
IC 035. US 100 101 102. G & S: Retail stores featuring beer and wine making supplies. FIRST USE: 19970601. FIRST USE IN COMMERCE: 19970601

http://tess2.uspto.gov/bin/showfield?f=doc&state=4001:z9m5x9.2.2

in '97 they filed for both "beer" and "Retail stores featuring beer and wine making supplies."

Can I ask what part of the "Beer" trademark have they used in the past 16 years?
Almost seems like squatting on a trademark if they havent done anything with it... IN 16 YEARS...

The "beer and wine making supplies" trademark I can see. They are a homebrew shop. But the first filing is ridiculous.

JonGrafto said:

Can I ask what part of the "Beer" trademark have they used in the past 16 years?
Almost seems like squatting on a trademark if they havent done anything with it... IN 16 YEARS...

The "beer and wine making supplies" trademark I can see. They are a homebrew shop. But the first filing is ridiculous.

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You're allowed to squat on something. And you better protect it. There was that company who had the Iphone trademark and they let Apple be until it was too established to actually win a lawsuit, instead of nipping it in the bud. Even if the Iphone device was released in like the late 90s.

hoppyhoppyhippo said:

You're allowed to squat on something. And you better protect it. There was that company who had the Iphone trademark and they let Apple be until it was too established to actually win a lawsuit, instead of nipping it in the bud. Even if the Iphone device was released in like the late 90s.

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Not really, not as per my understanding. As per wikipedia:

Trademarks rights must be maintained through actual lawful use of the trademark. These rights will cease if a mark is not actively used for a period of time, normally 5 years in most jurisdictions. In the case of a trademark registration, failure to actively use the mark in the lawful course of trade, or to enforce the registration in the event of infringement, may also expose the registration itself to become liable for an application for the removal from the register after a certain period of time on the grounds of "non-use".

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I'd argue that since the homebrew shop never used the "beer" aspect of the trademark, their rights ceased about ten years ago.

As I recall, the "iPhone" company was actually using the mark, although it wasn't a product that was especially widely distributed.

I'm better versed in Bird Law, but "lawful use" can sure be up for determination. Lawyers and maybe a judge will settle this in the long term, but the moral of the story is, if you have a great idea trademark it, patent it, etc. Whatever you can do to protect your intellectual property do it.

Knecht_Rupprecht said:

If I opened a lhbs and named Terrapin Home Brewing I imagine the brewery Terrapin wouldn't be thrilled regardless of whether I cited the Grateful Dead song. Especially if it impacted the business in any way.

Every post in this board with someone asking for advice on opening a brewery is followed by 40 replies on how it's a business, do your due diligence. Strange Brew CO didn't, a simple Google search two years ago would have prevented all of this.

The worst part of all of this is that it isn't even a good name.

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A terrapin is an animal. Can't copyright or trademark an organism.

Neither the brewing company or the LHBS in this example used "Terrapin Station" in the name.

thadius856 said:

A terrapin is an animal. Can't copyright or trademark an organism.

Neither the brewing company or the LHBS in this example used "Terrapin Station" in the name.

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SO you're saying I can open up a brewery, call it terrapin, or Flying Fish, or anything else that's an Organism and be fine? I don't think that would fly if I went to court. Like I don't think that the Seattle Seahawks can change their name to the Eagles and survive a TM dispute over it. And the Eagles have a trademark on their logo and name for merchandising. I don't think it's as clean cut as "can't trademark and organism"